• Mercedes-Benz USA, LLC v. Yechezkal Evan SperoInstituted
  PTAB · Dec 12, 2023 · IPR2023-01039 · APJ Jason W Melvin · IPR · Institution

  Instituted review of claims 8, 10–18, and 24–47 based on the petition grounds because Mercedes-Benz showed a reasonable likelihood of prevailing on at least one challenged claim.

  RulingsInstitution decision

  • PTAB / AIA Trials › Discretionary denialDenied

    “1. Lack of particularity First, Patent Owner contends that the Petition lacks particularity under 35 U.S.C. § 312(a)(3) because it improperly combines anticipation and obviousness 3 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125 Stat. 284 (2011), effective March 16, 2013, amended the applicable statutes. Because the application from which the ’551 patent issued was filed before this date, the pre-AIA versions of §§ 102 and 103 apply. 4 US 2003/0137849 A1, filed Jan. 22, 2002 (Ex. 1005). 5 US 6,049,749, issued Apr. 11, 2000 (Ex. 1006). 6 US 2002/0057572 A1, published May 16, 2002 (Ex. 1007). 7 WO 2001/07538 A2, published Sept. 27, 2001 (Ex. 1008). grounds based on Alden alone. Id. at 49–52. We do not agree that the Petition’s approach presents a problem or is hard to understand. As discussed below, we agree with Patent Owner that Petitioner has not adequately supported its obviousness contention based on Alden alone (see infra at 17 (§ II.D.2)), but that does not undermine the anticipation ground or make it difficult to understand. Accordingly, we do not agree with Patent Owner that the Petition warrants discretionary denial for lack of particularity.” slip op. at 7

  • PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Denied

    “Resp. 54–59. In that regard, Patent Owner relies on Valve Corp. v. Electronic Scripting Products, Inc., IPR2019-00062, Paper 11, 2 (PTAB April 12, 2019) (precedential). We do not agree, because Valve involved parties that were accused of infringement based on the same product. Valve, Paper 11, 9–10. Here, Patent Owner asserts that Petitioner is accused of infringing “based on the same type of headlight technology” (Prelim. Resp. 55), but that is insufficient. Patent Owner asserts that both parties’ accused headlights were “developed jointly with Hella KGaA Hueck & Co.” (id. at 56), but that also is an insufficient connection for us to consider two parties substantially related for purposes of discretionary denial. As Petitioner points out, it and VW are direct competitors, and they are accused of infringing based on two different products, not as a supplier and customer of a single product, as at issue in Valve. Prelim. Reply 1. Additionally, although Patent Owner asserts that Petitioner and VW “have a history of coordinating serial IPR petitions against asserted patents” (Prelim. Resp. 56), the facts of each case are unique and we will not infer a motive from prior proceedings. Having considered Patent Owner’s arguments,8 we conclude that the first General Plastic factor weighs strongly against discretionary denial.” slip op. at 9

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted

    “An inter partes review may not be instituted unless “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). For the reasons set forth below, we conclude that Petitioner has shown a reasonable likelihood it will prevail in establishing the unpatentability of at least one challenged claim.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “B. LEVEL OF ORDINARY SKILL IN THE ART Petitioner asserts that an ordinarily skilled artisan “would have had an undergraduate degree in mechanical engineering, electrical engineering, automotive engineering, optical engineering, applied physics, computer science, or similar disciplines, along with two years of experience working with intelligent vehicle systems, automotive control systems, or lighting control systems.” Pet. 9 (citing Ex. 1003 ¶ 33). Patent Owner does not dispute that level of ordinary skill in the art. Prelim. Resp. 6. We adopt the undisputed level of ordinary skill in the art for purposes of this decision.” slip op. at 10

  Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denial
  Patents in suitUS 9,955,551
• Ao Kaspersky Lab v. Open Text Inc.Institution denied
  PTAB · Dec 7, 2023 · IPR2023-00895 · APJ Aaron W Moore · IPR · Institution

  The Board denied institution because Petitioner did not show Fratric was a § 102 printed publication, so it did not establish a reasonable likelihood that any challenged claim was unpatentable.

  RulingsInstitution decision

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedDecided for patent owner

    “In an IPR, the petitioner bears the burden of establishing by a preponderance of the evidence that a particular document is a printed publication.” Nobel Biocare Servs. AG v. Instradent USA, Inc., 903 F.3d 1365, 1375 (Fed. Cir. 2018) (as amended Sept. 20, 2018). “[T]he key inquiry is whether or not a reference has been made ‘publicly accessible.’” In re Klopfenstein, 380 F.3d 1345, 1348 (Fed. Cir. 2004); see Acceleration Bay, LLC v. Activision Blizzard Inc., 908 F.3d 765, 772 (Fed. Cir. 2018) (explaining that public accessibility is “the touch-stone” in determining whether a reference qualifies as a printed publication). slip op. at 8

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “For these reasons, we conclude that Petitioner has not met its burden of establishing, by a preponderance of the evidence, that Fratric is a Section 102 printed publication. It follows that Petitioner has not established a reasonable likelihood of proving at least one claim of the ’591 patent unpatentable. III. CONCLUSION Having determined that Petitioner has not established a reasonable likelihood of proving that at least one claim of the ’591 patent is unpatentable over the cited prior art, we do not institute an inter partes review.5” slip op. at 10

  § 102 anticipation
  Patents in suitUS 10,284,591
• Continental Automotive Systems, Inc. v. Intellectual Ventures II LLCAll claims unpatentable
  PTAB · Dec 5, 2023 · IPR2022-00974 · APJ Aaron W Moore · IPR · Final written decision

  Claims 6–9, 11, 13, 14, 18, 22–25, 27, 28, 32, and 36–38 are unpatentable as obvious over Hwang and McFarland.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner contends that a person of ordinary skill in the art at the time of the alleged invention “would have had a Bachelor of Science in electrical engineering, computer engineering, or an equivalent field as well as three years of experience in wireless communication technology, or a master’s degree in electrical engineering, or other equivalent degree.” Pet. 6–7 (citing Ex. 1003 ¶¶ 38–40). Patent Owner has not proposed an alternative, and, having reviewed the arguments and evidence in the full record, we adopt Petitioner’s definition, as we did in the Institution Decision, finding it consistent with the ’641 patent and the asserted prior art. C.” slip op. at 9

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached

    “Petitioner proposes a construction for the term “radio network information” in dependent claims 9, 14, and 28. See Pet. 7. Patent Owner has not proposed a specific construction for any claim term and has not disputed Petitioner’s proposed construction for “radio network information.” In view of the analysis below, we determine that we need not expressly construe “radio network information,” and that no other claim construction is necessary. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (explaining that construction is needed only for terms that are in dispute, and only as necessary to resolve the controversy).” slip op. at 10

  • ExcludeMotion to exclude, deniedDenied
  • Expert testimonyPetitioner expert creditedPetitioner expert discountedMixed

    “Figure from Page 17 of the Akl Supplemental Declaration We find it unclear from this figure and the associated explanation in the Declaration (see Ex. 1038 ¶¶ 30–32) how the map burst and traffic burst blocks in green and blue factor in, because they cannot be received by the 2.5 MHz device. Dr. Akl testified that “McFarland teaches that necessary messages, e.g., including broadcast messages, or any other messages that need to be received by multiple nodes, ‘must be transmitted in a mode that all nodes to which they are directed are able to receive,’ that is, the base mode (e.g., the core-band).” Ex. 1038 ¶ 31 (quoting Ex. 1004 ¶ 60). He then states that one “would understand that because Hwang’s AAS_MAP_Burst_Location_IE contains system information and an index of where the MAP bursts are going to be, it is a message that needs to be received by multiple nodes, and thus is a necessary message that must be transmitted in a mode that all nodes to which they are directed are able to receive.” Id. It does not appear, however, that the blue and green blocks could be part of “broadcast messages” intended for a 2.5 MHz mobile station because they cannot be received by that mobile station. We thus do not agree that McFarland would suggest including map burst blocks in the 2.5 MHz band because they are “broadcast messages.” We also fail to see why the map burst locations would need to be received by multiple nodes, as that seems to be data that is tailored to the mobile device with which the base station is communicating.7 However, we do find it readily apparent that if the base station and the mobile station have determined to communicate using a particular bandwidth, as contemplated by the combination presented in the Petition, the map bursts necessarily would be included in that bandwidth in order for the communication scheme to be successful. The mobile station would need to” slip op. at 16

  Patent outcomesUS 8,953,641 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,953,641
• Resmed, Inc. v. New York UniversityAll claims unpatentable
  PTAB · Dec 4, 2023 · IPR2022-00989 · APJ James A Tartal · IPR · Final written decision

  Claims 1, 2, 5–11, 13, and 15–30 are unpatentable as obvious over Sullivan995 and Sullivan460; anticipation was not shown, and the other obviousness ground was not reached.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “may be considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). Petitioner contends that a person of ordinary skill in the art would have had “at least a bachelor’s degree in mechanical engineering, biomedical engineering, or a similar technical field, with at least two years of relevant product design experience” and “[a]dditional experience could substitute for less education, and additional education could likewise substitute for less experience.” Pet. 19 (citing Ex. 1003 ¶ 77). Petitioner further states that the “Petition does not turn on this precise definition, and the challenged claims would be unpatentable from the perspective of any reasonable person of ordinary skill in the art at the relevant time.” Id. (citing Ex. 1003 ¶ 78). Patent Owner does not dispute Petitioner’s definition of the person of ordinary skill in the art. PO Resp. 15–16. We find that the ’539 patent and the cited prior art references reflect the appropriate level of skill at the time of the claimed invention and that the level of appropriate skill reflected in these references and in the ’539 patent is consistent with the definition of a person of ordinary skill in the art proposed by Petitioner. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 12

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner

    “awake state” Claim 24 recites, in part, “to determine whether breathing patterns indicate an asleep state or an awake state.” Ex. 1001, 11:36–12:7; see also id. at 9:49–64 (claim 1 reciting “between an awake state and an asleep state”), 10:42–56 (claim 11 reciting “at least one of an awake state or an asleep state”). In regard to its allegations of obviousness, Petitioner’s arguments suggest an “awake state” ordinarily means when a patient is not asleep. Pet. 36–37, 42. By contrast, with regard to its allegations of anticipation, Petitioner argues that under Patent Owner’s “implied construction of ‘an awake state’ based on [Patent Owner’s] infringement allegations” in district court, “the patient is in an awake state when there is an absence of obstructions or other breathing patterns indicative of sleep.” Id. at 68–70 (citing, e.g., Ex. 1018 ¶¶ 2, 158, 159). Petitioner provides no further support for this “implied construction” purportedly taken from Patent Owner’s district court allegations. Id. Dr. Kirkness, in support of Petitioner, applied the plain meaning of all terms and phrases. See, e.g., Ex. 1003 ¶ 80. In regard to supporting Petitioner’s allegations of anticipation, Dr. Kirkness merely assumed Patent Owner’s purported district court claim construction “position to be true.” Ex. 1003 ¶ 253. In this proceeding Patent Owner does not propose an express meaning for “awake state.” See PO Resp. 29–33. More generally, Patent Owner states that the ’539 patent “teaches how to distinguish between an awake state and an asleep state.” Id. at 8. From the arguments of the Parties, we discern no dispute in this proceeding that a plain and ordinary meaning of an “awake state” is a state in which a patient is not asleep. See Ex. 1001, 3:1–5 (distinguishing between “a wake state” and “a sleep state”), 7:22–24 (describing an embodiment with a processing arrangement that “may determine whether the patient is in a sleep state or a wake state based on the breathing pattern”).8 We apply the plain and ordinary meaning of “awake state” in this proceeding and further determine that Petitioner has not shown by a preponderance of the evidence that an awake state means “an absence of obstructions or other breathing patterns indicative of sleep.” slip op. at 15

  • Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Plain and ordinary meaningDecided for petitioner

    “Next, we turn to the Specification. “While we read claims in view of the specification . . . we do not read limitations from the embodiments in the specification into the claims.” Hill-Rom Servs., 755 F. 3d at 1371 (citation omitted). “We depart from the plain and ordinary meaning of claim terms based on the specification in only two instances: lexicography and disavowal.” Id. In order for a patentee to act as its own lexicographer, the “patentee must ‘clearly set forth a definition of the disputed claim term other than its plain and ordinary meaning’” and “must ‘clearly express an intent’ to redefine the terms.” Bradium Tech., 923 F. 3d at 1044. In this case, Patent Owner does not argue that it disavowed the full scope of the plain and ordinary meaning of claim 24, nor does Patent Owner argue that it explicitly defined “analyzing the breathing patterns” in the Specification. See, e.g., PO Resp. 29–32. We determine that there is no disavowal nor any explicit lexicographic definition of “analyzing the breathing patterns” in the Specification. Patent Owner instead relies on an “implied lexicography” theory as to why we should construe the phrase as Patent Owner proposes. PO Sur-reply 2, 6–7 (citing, inter alia, AstraZeneca AB v. Mut. Pharm. Co., Inc., 384 F.3d 1333, 1339 (Fed. Cir. 2004)). We disagree.” slip op. at 27

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner

    “We disagree with Patent Owner’s arguments—that Petitioner fails to show any motivation to combine and that Sullivan460 is not enabled— merely because Dr. Kirkness indicated in a deposition that he did not know how a preset level is calculated from a sentence in Sullivan460. As Petitioner explains, enablement “is not a requirement to prove invalidity under §103.” Amgen, 314 F.3d at 1357 (under §103, “a reference need not be enabled; it qualifies as a prior art, regardless, for whatever is disclosed therein”). Moreover, we agree with Petitioner that the Challenged Claims do not require any preset level for a flow rate, and a person of ordinary skill “would have understood that a preset level is established from previously-acquired data or data from a previous window of time, such as an average level, for example, as taught in Sullivan995.” Pet. Reply 15 (citing Ex. 2014, 38:2–16; Ex. 1005, 17:3–27, Fig. 12). Patent Owner responds that Petitioner’s assertion is unsupported, and that “Petitioner is obligated to address this challenge, and failed to do so.” PO Sur-reply 18–19 (citing In re Morsa, 713 F.3d 104, 110 (Fed. Cir. 2013)). We find Petitioner’s arguments persuasive because they are supported by the asserted references. Sullivan995 discloses that the computing system may “calculate control values of patterns for each patient based on moving average values or such values or patterns will be pre-programmed into the computing system.” Ex. 1005, 17:14–18. According to Sullivan995, when “signals deviate from predetermined values or patterns the computer system generates a signal which is sent to the feedback speed controller on the blower motor.” Id. at 17:19–22. Based on this disclosure, and given that Sullivan460 incorporates Sullivan995 by reference, we agree with Petitioner that Sullivan460’s disclosure of detecting that the flow rate has fallen below a preset level would have informed a person of ordinary skill that this level was predetermined, so that “the controller 100 activates the nCPAP apparatus 90 to supply air to the patient 30 at a pressure which ameliorates or eliminates the upper airway flow limitation.”16 Ex. 1006, 10:17–21.” slip op. at 50

  Patent outcomesUS 9,427,539 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,427,539
• Telefonaktiebolaget LM Ericsson / Ericsson Inc. et al. v. K.Mizra LLCNo claims unpatentable
  PTAB · Oct 26, 2023 · IPR2022-00730 · APJ Iftikhar Ahmed · IPR · Final written decision

  Claims 22, 23, 30, 32, and 33 were not shown unpatentable because Pakzad did not disclose the claimed combined macro and femto timing information, and the obviousness grounds did not address that limitation.

  RulingsFinal written decision

  • Expert testimonyPatent owner expert creditedPetitioner expert discountedDecided for patent owner

    “information from all three types of sources together or at the same time. Patent Owner argues that “a [person of ordinary skill in the art] would understand that this passage in Pakzad ‘any one of several sources’ confirms that Pakzad only uses a single signal source at a time.” PO Resp. 34 (citing Ex. 2002 ¶ 69). Dr. Chrissan testifies that he understands this disclosure to mean that “Pakzad teaches a single signal source at a time, not more than one.” Ex. 2002 ¶ 70 (emphasis added). We find Patent Owner’s interpretation, supported by Dr. Chrissan’s testimony, to be a reasonable reading of Pakzad’s disclosure. Dr. Chrissan further testifies that “Pakzad’s invention is about using both a course [sic] routing graph and fine routing graph to make computation of a motion model (e.g., a particle filter) more efficient,” and “Pakzad was not directed to leveraging a heterogenous network by incorporating both macro and femto cells concurrently.” Id. ¶ 68. We agree with Dr. Chrissan’s explanation for the lack of clear disclosure in Pakzad about which measurements Pakzad uses with its particle filter.” slip op. at 25

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “understanding of a person of ordinary skill in the art at the time of the invention. Graham, 383 U.S. at 17. Petitioner contends that a person of ordinary skill in the art “would have been someone with at least (1) a bachelor’s degree in electrical engineering, computer engineering/science, or a related scientific field, and (2) either (a) a master’s degree in electrical engineering, computer engineering/science, or a related filed, or (b) two or more years of work or research experience in wireless networking and/or computing.” Pet. 21 (citing Ex. 1009 ¶ 23). Patent Owner does not dispute Petitioner’s definition for a person of ordinary skill in the art, but adds that the person of ordinary skill in the art “may alternatively have additional years of practical and relevant work or research experience as substitution for less or different technical education, and vice versa.” See PO Resp. 17. We determine that the level of ordinary skill proposed by Petitioner is consistent with the ’819 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978). We adopt Petitioner’s proposed level in deciding the patentability of the challenged claims.” slip op. at 9

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner

    “claim 30 should be construed “to refer to the previously recited ‘femto base station timing information,’ ‘macro base station timing information,’ and ‘femto base station position information.’” PO Resp. 18. Patent Owner argues that its proposed construction is “based on at least three aspects of the intrinsic record: (1) the claim language itself; (2) guidance from the specification defining the disputed term; and (3) illustrative embodiments confirming the meaning of the disputed term.” Id. (citing Ex. 2002 ¶ 47). Specifically, Patent Owner contends that “the specification describes two embodiments that further confirm to a [person of ordinary skill in the art] that ‘the base station information’ consists of the [three types of information previously] recited.” Id. at 19–23 (citing Ex. 1001, 19:29–33, 20:50–54, Figs. 8, 9; Ex. 2002 ¶¶ 47–55).” slip op. at 10

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable

    “More importantly, anticipation requires that the four corners of a single, prior art document describe every element of the claimed invention, and we are not persuaded that Pakzad describes the combinational use of the two different types of timing information as claimed. See Xerox Corp. v. 3Com Corp., 458 F.3d 1310, 1322 (Fed. Cir. 2006) (citing Advanced Display Sys., Inc. v. Kent State Univ., 212 F.3d 1272, 1282 (Fed. Cir. 2000)). The Federal Circuit has made it clear that “it is not enough that the prior art reference discloses part of the claimed invention, which an ordinary artisan might supplement to make the whole, or that it includes multiple, distinct teachings that the artisan might somehow combine to achieve the claimed invention.” Net MoneyIN, 545 F.3d at 1371 (citation omitted) (emphasis added). In Net MoneyIN, although a prior art reference described two protocols, which when taken together, disclosed “all five links arranged or combined in the same way as claimed,” the Federal Circuit determined that the reference did not anticipate the claim. See id. Rather, the Federal” slip op. at 28

  Patent outcomesUS 8,958,819 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Enfish · Phillips · KSR · Graham
  Patents in suitUS 8,958,819
• Keysight Technologies, Inc. v. Centripetal Networks, Inc.Instituted
  PTAB · Aug 7, 2023 · IPR2023-00446 · APJ Kevin F Turner · IPR · Institution

  The Board instituted IPR on claims 1–20, finding a reasonable likelihood that Sourcefire and Emerging Threats render the claims obvious.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted

    “An inter partes review may be instituted only if “the information presented in the petition . . . and any [preliminary] response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). For the reasons given below, Petitioner has established a reasonable likelihood that it would prevail in showing the unpatentability of at least one of the challenged claims of the ’343 Patent. Accordingly, we institute an inter partes review of claims 1–20 of the ’343 Patent on the grounds of unpatentability raised in the Petition.” slip op. at 2

  • PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Decided for petitioner

    “We agree with Petitioner’s arguments. The fact that the disclosures of cited references are the same or similar is unremarkable in that they are applied against the same claims. Additionally, Patent Owner has not presented evidence that the instant Petitioner applied the prior petition, and its non-institution, as a roadmap to try and correct errors of the prior petition. As such, we agree with Petitioner that factor (1) weighs strongly against discretionary denial.” slip op. at 11

  • PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner

    “After reviewing the evidence, we do not agree with Patent Owner’s assessment that Emerging Threats is cumulative to Stolfo, which the Examiner considered during prosecution. Patent Owner previously distinguished its claims from Stolfo by arguing, in part, that “Stolfo describes that network statistics may be used to ‘modify the decoy traffic such that it appears statistically similar to normal traffic,’” and that “Stolfo describes generating decoy traffic and not applying a transformation to existing network traffic.” Ex. 1002, 87 (quoting Ex. 2001 ¶ 124). Patent Owner also argued that “the decoy traffic used in Stolfo does not prevent an exfiltration operation[, but instead,] Stolfo explains that ‘[t]hese traps use decoy information . . . to attract, deceive, and/or confuse attackers (e.g., inside attackers, external attackers, etc.) and/or malware.’” Id. (quoting Ex. 2001 ¶ 124). In contrast, as Petitioner asserts, Emerging Threats discloses its rules to be Snort rules for preventing exfiltration. Pet. 37–43. Petitioner’s explanations of the different rules disclosed in Emerging Threats illustrate their use in preventing exfiltration, and not merely applying processes to decoy traffic. Id. Petitioner also discusses the correspondences between specific rules provided in Emerging Threats and operators disclosed in the ’343 Patent. Id. As such, we are not persuaded by Patent Owner that Emerging Threats is merely cumulative to Stolfo. Therefore, we are not persuaded that Petitioner’s combination of Sourcefire and Emerging Threats is cumulative to the art previously considered by the Examiner in the prosecution of the application that issued as the ’343 Patent, or that the proposed grounds are based on the same or substantially the same art or arguments previously presented to the Office. In conjunction with Patent Owner’s contention that Petitioner has not shown that the Office erred, we conclude that, given the circumstances presented here, Patent Owner has not demonstrated that Petitioner’s proposed grounds are based on the same or substantially the same art or arguments previously presented to the Office. As a result, we need not further consider whether Petitioner has shown error on the part of the Office. Accordingly, although we have considered Patent Owner’s request for our exercise of discretion to deny institution under 35 U.S.C. § 325(d), on the record before us, we conclude that denial of institution on that basis is not warranted. We proceed to consider the merits of Petitioner’s proposed grounds of unpatentability below.” slip op. at 17

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner

    “Weighing the evidence of the public accessibility of Emerging Threats in the relevant timeframe, we determine that Petitioner has established that Emerging Threats qualifies as a printed publication under § 102(b) for purposes of institution. The presence of the Internet Archive’s Wayback Machine copy suggests that the document was available and was accessible on December 2, 2010, prior to the March 12, 2013 effective filing date of the ’343 Patent. We have concerns that Dr. Staniford is only able to vaguely assert that the rules provided in the text document appear to be true copies of the rules that existed in 2010. See Ex. 1003 ¶ 204. Given the nature of inter partes review, however, we can be concerned only with the publication itself; we cannot rely on or inquire into how some system performed or was used in the relevant timeframe. Nonetheless, we are persuaded by Dr. Staniford’s unrebutted testimony that Snort was begun as an open source project in the late 1990s, that the Bleeding Snort project launched in 2004 as an independent clearing house for Snort rules, and that the project continues as Emerging Threats. See Ex. 1003 ¶¶ 202–203. This testimony is sufficient, for purposes of institution, to show that one of ordinary skill in the art, at and prior to the effective filing date of the ’343 Patent, would have known to look to the Emerging Threats website for Snort rules that could be applied to conventional cyber defense systems. We determine this to be a reasonable showing, at this stage of the proceeding, that Emerging Threats was sufficiently publicly accessible to be a printed publication. With respect to Patent Owner’s arguments regarding searchability of the Emerging Threats website, given its notoriety, we are unpersuaded that persons of ordinary skill in the art proceeding to the website would not have been able to search its contents and find the rules logged thereon that would have been applicable to the users’ network security concerns. Even based on Patent Owner’s presentation of the website (Prelim. Resp. 40 (citing Ex. 1030, 11; Ex. 1054)), we are persuaded that it would only have required the exercise of reasonable diligence to find the rules list, given the knowledge that one of ordinary skill would have had regarding Emerging Threats. Petitioner asserts that specific rules can be located within Emerging Threats by searching for their unique SID (Pet. 38 n.9), but persons proceeding to the website without knowledge of a specific SID would have found this to be of little help. Nonetheless, the number of locations that the rules may be located on the Emerging Threats website is still limited and users would have been able to utilize the “Last Modified” indicator, showing which directories had been modified recently, to narrow down any search, assuming that items that had not been modified for some time would be less worthy of search. As such, we are not persuaded that persons of ordinary skill in the art, proceeding to the Emerging Threats website, would not have been able to have searched its contents and find the rules contained thereon.” slip op. at 26

  Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 10,567,343
• Google LLC v. Ipa Technologies Inc.All claims unpatentable
  PTAB · Jun 1, 2023 · IPR2019-00731 · APJ Trevor M Jefferson · IPR · Remand

  Claim 28 is unpatentable under § 103(a) over Martin and Farley; Martin qualifies as prior art because Dr. Moran’s contribution made him a joint inventor of the relied-on disclosure.

  RulingsRemand decision

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Patents / published applications (effective date, provisional support)Reference is prior artDecided for petitioner

    “we do not agree with Patent Owner that evidence analogous to that in Duncan Parking is required in this case or for Petitioner to meet its burden by stating which specific aspects of the Facilitator were conceived by Dr. Moran. PO Remand 3–4. As the Federal Circuit stated, the facilitator described in Section 4.5 of the Martin reference plays a central role in the OAA disclosed in the specification of the ’560 patent. Google, 34 F.4th at 1087; see Ex. 1011, 23–24 (Section 4.5); Ex. 1001, 19:14–19:62. In addition, Patent Owner admits that “large portions of the ’560 application and the Martin reference are identical or almost identical.” PO Resp. 1. We find that Petitioner and Dr. Moran have sufficiently identified the facilitator in the Martin reference as his work, and persuasively asserted that Dr. Moran’s background and experience with OAA and distributed software systems support his contribution to the conception of the facilitator in the distributed agent approach of Sections 4.1–4.5. Ex. 1007 ¶¶ 23–39. Dr. Moran’s testimony provides sufficient and persuasive detail to support his contribution claim to the facilitator of Section 4.5. Id.” slip op. at 21

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner

    “With respect to Dr. Moran’s contribution to the Martin reference, we find Dr. Moran’s testimony credible over that of Mr. Cheyer and Mr. Martin, because, as the Federal Circuit noted, because the latter testimony conflicts with other evidence of record. Google, 34 F.4th at 1088. Cheyer’s and Martin’s testimony that Dr. Moran’s role was administrative and non-technical with respect to the core infrastructure of OAA is belied by a separate article describing OAA that includes the facilitator and lists Dr. Moran as the lead author. Ex. 1174, 1–2, 4. Indeed, the OAA article lists Dr. Moran and Mr. Cheyer as authors but excludes Mr. Martin. Id. Although Mr. Cheyer disagrees with the article’s description of the origins of OAA and the facilitator (Ex. 2037, 78:23–79:12 (Mr. Cheyer asserting that he “would not agree in the characterization of Open Agent Architecture grew out of [earlier] works” as described in the article)), Mr. Cheyer admits patent]” (id. at 1088), “which is a continuation-in-part of the application that resulted in the ’115 patent” (id. at 1086). in his deposition that Dr. Moran was extremely technical, and probably made technical contributions to OAA (id. at 34:1–20, 64:16–20, 102:2–4). Similarly, Mr. Martin’s testimony also supports that Dr. Moran “may have made contributions to the technological development of either interfaces for use with OAA, agents used with OAA, or systems based on OAA.” Ex. 2038, 116:2–8, 117:7–119:10. When viewed in light of Dr. Moran’s status as a joint inventor on the closely related ’931 patent (Ex. 2002, code (75)) and as a lead author of the substantive paper that discusses OAA’s early development, we find Mr. Martin’s and Mr. Cheyer’s admissions—that Dr. Moran made technical contributions to OAA—undermine their testimony that Dr. Moran’s inclusion as an author on the Martin reference was a matter of administrative respect and not a result of a technical contribution. See PO Remand 11; PO Resp. 50–51. Indeed, we find Cheyer and Martin’s general description of Dr. Moran—as an administrator without technical contributions to the Martin reference—is not supported by the full record, which instead supports Dr. Moran’s contributions to technical work that involves the Martin reference, such as contemporary papers and the ’931 patent. See, e.g., Ex. 1174, 2002. In sum, the testimony and contemporary evidence supports Dr. Moran’s testimony that his conception and contribution to the Martin reference, the facilitator, was technical and not merely administrative. Ex. 1007 ¶ 39.” slip op. at 23

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentable

    “We disagree with Patent Owner’s contention. Rather, we find that the Petition persuasively explains how Martin discloses a facilitator agent arranged to coordinate cooperative task completion within a distributed computing environment having autonomous service-providing electronic agents. Pet. 39; Ex. 1002 ¶ 100. Further, Petitioner persuasively demonstrates that Farley discloses how agent functionality can be distributed across multiple processes. Pet. 39–40; Ex. 1002 ¶¶ 101–102. Finally, Petitioner also provides persuasive reasons as to why one of ordinary skill in the art would have been motivated to combine Martin and Farley, including reasons expressly provided by Farley. Pet. 40; Ex. 1002 ¶¶ 103–104.” slip op. at 28

  • ExcludeMotion to exclude, deniedMixed

    “III. MOTION TO EXCLUDE In our prior Final Written Decision, we denied Patent Owner’s Motion to Exclude (1) portions of Exhibit 1153; (2) Exhibits 1170, 1171, and 1172; (3) Exhibit 1174; and (4) portions of Exhibits 2037 and 2038; and we dismissed as moot Patent Owner’s Motion to Exclude (1) Exhibits 1158 and 1159 and (2) Exhibits 1175, 1176, and 1181. Final Dec. 26–30. We maintain these determinations on remand.” slip op. at 29

  Patent outcomesUS 7,069,560 unpatentable
  § 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,069,560
• Google LLC v. Ipa Technologies Inc.All claims unpatentable
  PTAB · Jun 1, 2023 · IPR2019-00728 · APJ Trevor M Jefferson · IPR · Remand

  On remand, the Board held claim 63 unpatentable under § 103(a) over Martin and Kohn, finding Martin was prior art because Moran was a joint inventor.

  RulingsRemand decision

  • RemandDecided for petitioner

    “Petitioner relies upon is sufficient to establish the degree to which the reliedon portions of the Martin reference were conceived by Dr. Moran, and the significance of those contributions to the overall anticipating disclosure of the Martin reference. See Google, 34 F.4th at 1086–88; Duncan Parking, 914 F.3d at 1358. Contrary to Patent Owner’s contentions, Petitioner is not merely relying on Dr. Moran’s authorship to establish inventorship. PO Remand 8 (citing In re Katz, 687 F.2d 450, 455 (C.C.P.A. 1982)). Instead, Dr. Moran’s testimony establishes how his background led to his contributions to the multiple facilitator architectures disclosed in Martin and in the ’115 patent specification. Google, 34 F.4th at 1087; Ex. 1007 ¶¶ 23– 34 (OAA project), 35–39 (OAA paper). In view of Dr. Moran’s testimony, we do not agree with Patent Owner that evidence analogous to that in Duncan Parking is required in this case or for Petitioner to meet its burden by stating which specific aspects of the Facilitator were conceived by Dr. Moran. PO Remand 3–4. As the Federal Circuit stated, the facilitator described in Section 4.5 of the Martin reference plays a central role in the OAA disclosed in the specification of the ’115 patent. Google, 34 F.4th at 1087; see Ex. 1011, 23–24 (Section 4.5); Ex. 1001, 18:56–19:36. In addition, Patent Owner admits that “large portions of the ’115 application and the Martin reference are identical or almost identical.” PO Resp. 1. We find that Petitioner and Dr. Moran have sufficiently identified the facilitator in the Martin reference as his work, and persuasively asserted that Dr. Moran’s background and experience with OAA and distributed software systems support his contribution to the conception of the facilitator in the distributed agent approach of Sections 4.1–4.5. Ex. 1007 ¶¶ 23–39. Dr. Moran’s testimony provides sufficient and persuasive detail to support his contribution claim to the facilitator of Section 4.5. Id. Based on the record, the Federal Circuit’s remand squarely asks whether Dr. Moran’s stated contributions to the conception of the facilitator should be credited over Cheyer and Martin’s conflicting testimony regarding his lack of technical contribution. Google, 34 F.4th at 1088 (stating that “[t]he testimony of Dr. Moran, if credited, might well establish that he was a co-inventor of the particular portions of the Martin reference relied on by Google in, and relevant to, the challenge to particular claims”). When Dr. Moran’s testimony is viewed in combination with the supporting evidence,7 we find that incorporation of the facilitator in general, which is also found in the specification and claims, persuasively supports Dr. Moran’s testimony regarding his inventive contribution to the Martin reference. Specifically, we find Dr. Moran’s testimony persuasively supported and credible over the conflicting testimony and evidence offered by Mr. Cheyer and Mr. Martin. See Pet. Reply 12–13; Ex. 2038, 116:2–8, 117:7–119:10 (Cheyer admission that Dr. Moran made technical contributions to OAA); Ex. 2037, 34:1–20, 64:16–20, 102:2–4.” slip op. at 21

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Patents / published applications (effective date, provisional support)Reference is prior artDecided for petitioner

    “Upon weighing the parties’ testimony and evidence, we agree with Petitioner that sufficient evidence supports the technical contributions of Dr. Moran to OAA, including admissions by Mr. Martin that Dr. Moran made such contributions (see Ex. 2038, 116:2–116:8, 117:7–119:10; see also id. at 73:3–73:15); contemporaneous papers showing Dr. Moran’s contribution to the OAA including a facilitator (see Ex. 1170; Ex. 1174, 1– 2), and the ’931 patent (Ex. 2002). See Pet. Reply 5–7, 8, 12–13; Pet. Remand 11. In particular, Dr. Moran’s testimony establishes that he contributed to Section 4.5, the facilitator that plays an essential role in the OAA, that differs from prior art agents, and that is found in the ’115 specification. We find Dr. Moran’s contributions to be significant when measured against the full anticipating Martin reference, and to render him a joint inventor of the Martin reference. Google, 34 F.4th at 1085 (quoting Duncan Parking, 914 F.3d at 1358). 5. Conclusion Based on the full record, we find that Petitioner has provided persuasive evidence by a preponderance of the evidence that Dr. Moran is an inventive entity to the Martin reference. Accordingly, we find that Petitioner has established that Martin is “by another” and is prior art under § 102(a) to the ’115 patent. We next turn to the sole remaining ground based on the Martin reference to determine the patentability of the remaining challenged claim.” slip op. at 26

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner

    “combination of Martin and Kohn. Petitioner’s expert, Dr. Olsen, provides persuasive testimony and evidence that Martin teaches compound goals and a skilled artisan would have been motivated in view of Kohn to modify Martin’s facilitator agent to interpret a compound goal that includes both local and global constraints. Pet. 32–34; Ex. 1002 ¶¶ 49, 77–88. Dr. Olsen’s testimony does not evince hindsight, but instead supports the finding that an ordinarily skilled artisan could use compound goals required in Martin and apply the type of constraints (global and local) disclosed in Kohn. Ex. 2024, 159:4–160:16. In addition, Dr. Olsen testified, the proposed implementation “would have been a mere combination of known components and technologies . . . , according to known methods, to produce predictable results.” Ex. 1002 ¶ 87. We do not agree that this case presents the same technical issues raised in G.B.T. Inc. v. Walletex Microelectronics Ltd., IPR2018-00326, Paper 60 at 16–17 (PTAB June 25, 2019), where the petitioner’s declarant failed to show how the combination would have achieved desired results and features from the combination of the circuits. Here, Dr. Olsen identified known compound goals in Martin to which Kohn’s local and global constraints are applicable. Pet. 32–34; Ex. 1002 ¶¶ 49, 77–88. In view of the level of skill in the art and the testimony of Dr. Olsen (Ex. 1002 ¶¶ 49, 77–88; Ex. 2024, 159:4–160:16), we find that Petitioner establishes persuasive motivation to combine the software teachings of Kohn’s constraints into the goals of Martin and how the references would have been combined by a preponderance of the evidence.” slip op. at 29

  • ExcludeMotion to exclude, deniedMotion to exclude, grantedMixed

    “III. MOTION TO EXCLUDE In our prior Final Written Decision, we denied Patent Owner’s Motion to Exclude (1) portions of Exhibit 1153; (2) Exhibits 1170, 1171, and 1172; (3) Exhibit 1174; and (4) portions of Exhibits 2037 and 2038; and we dismissed as moot Patent Owner’s Motion to Exclude (1) Exhibits 1158 and 1159 and (2) Exhibits 1175, 1176, and 1181. Final Dec. 25–28. We maintain these determinations on remand.” slip op. at 30

  Patent outcomesUS 6,851,115 unpatentable
  § 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 6,851,115
• Laltitude LLC, Dba Picasso Tiles v. Altus Holdings, Inc.All claims unpatentable
  PTAB · May 10, 2023 · IPR2022-00155 · APJ Bart A Gerstenblith · IPR · Final written decision

  The sole challenged claim was held unpatentable as anticipated by Zhao US and Zhao CN; the Board did not reach the three obviousness grounds.

  RulingsFinal written decision

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable

    “same as that used for infringement, except that for anticipation, the patented design is compared with the alleged anticipatory reference rather than an accused design. Int’l Seaway Trading Corp. v. Walgreens Corp., 589 F.3d 1233, 1238, 1240 (Fed. Cir. 2009). The ordinary observer test for design patent infringement was first enunciated by the Supreme Court in Gorham Co. v. White, 81 U.S. 511 (1871), as follows: [I]f, in the eye of an ordinary observer, giving such attention as a purchaser usually gives, two designs are substantially the same, if the resemblance is such as to deceive such an observer, inducing him to purchase one supposing it to be the other, the first one patented is infringed by the other. Id. at 528. The ordinary observer test requires the fact finder to consider all of the ornamental features illustrated in the figures that are visible at any time in the “normal use” lifetime of the accused product, i.e., “from the completion of manufacture or assembly until the ultimate destruction, loss, or disappearance of the article.” Int’l Seaway, 589 F.3d at 1241. Further, while the ordinary observer test requires consideration of the overall prior art and claimed designs, [t]he mandated overall comparison is a comparison taking into account significant differences between the two designs, not minor or trivial differences that necessarily exist between any two designs that are not exact copies of one another. Just as “minor differences between a patented design and an accused article’s design cannot, and shall not, prevent a finding of infringement” . . . so too minor differences cannot prevent a finding of anticipation. Id. at 1243 (citation omitted) (quoting Litton Sys., Inc. v. Whirlpool Corp., 728 F.2d 1423, 1444 (1984)).” slip op. at 8

  Patent outcomesUS D719,138 unpatentable
  § 102 anticipation
• Tiktok Inc. v. Advanced Coding Technologies LLCInstitution denied
  PTAB · Mar 27, 2023 · IPR2022-01546 · APJ Bart A Gerstenblith · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–7 were unpatentable as obvious over either asserted combination.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “An inter partes review may be instituted only if “the information presented in the petition . . . and any [preliminary] response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). For the reasons given below, on this record, Petitioner has not established a reasonable likelihood that it would prevail in showing the unpatentability of at least one of the Challenged Claims. Accordingly, we deny the Petition and do not institute an inter partes review of the ’154 patent.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Level of Ordinary Skill in the Art Petitioner, supported by Dr. Lett’s testimony, proposes that a person of ordinary skill in the art at the time of the invention “would have been a person with a working knowledge of digital video and audio technologies.” Pet. 4 (citing Ex. 1003 ¶ 22). Petitioner contends that a person of ordinary skill in the art would have had a Bachelor of Science, a Bachelor of Applied Science, or a Bachelor of Engineering degree in an academic discipline emphasizing the design of electrical, computer, or software technologies, in combination with training or at least one to two years of related work experience with capture and processing of data or information, including but not limited to digital video and audio technologies. Id. Alternatively, Petitioner contends, “the person could have also had a Master of Science, Master of Applied Science, or Master of Engineering degree in a relevant academic discipline with less than a year of related work experience in the same discipline.” Id. at 5 (citing Ex. 1003 ¶ 22). Patent Owner states that “[f]or the purpose of this Preliminary Response only, Patent Owner utilizes Petitioner’s proposed level of skill in the art.” Prelim. Resp. 13. At this stage of the proceeding and on the present record, we find that Petitioner’s uncontested level of ordinary skill in the art is consistent with the level of ordinary skill in the art reflected by the ’154 patent and the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978). Therefore, we adopt Petitioner’s level of ordinary skill in the art in our consideration of the issues presently before us.” slip op. at 6

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “Additionally, only terms that are in controversy need to be construed, and these need be construed only to the extent necessary to resolve the controversy. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). Petitioner and Patent Owner agree that no claim terms require an express construction at this stage of the proceeding. Pet. 14; Prelim. Resp. 13. Accordingly, we need not construe any claim terms expressly because none are in dispute.7 See Vivid Techs., 200 F.3d at 803.” slip op. at 7

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable

    “Third, as noted above, Petitioner also argues that it would have been obvious to one of ordinary skill in the art that elapsed playback time would be indicated by time stamps included in the audio content. Pet. 15–16. But, on this aspect of Petitioner’s contention, neither Petitioner nor Mr. Lett provides any reason why one of ordinary skill in the art would have found it obvious to include a time stamp in Lindroos’ audio data. Id.; Ex. 1003 ¶ 35. As reflected in our discussion above, Mr. Lett’s testimony regarding Exhibits 1010–1013 is unsupported by the references cited. Thus, Petitioner’s assertion that this limitation was “well known” and “would have been obvious” to one of ordinary skill in the art is not supported on the record before us. Accordingly, Petitioner fails to demonstrate on the present 13 Mr. Lett states that he “refer[s] to these other publications . . . merely for purposes of corroborating this common background knowledge recognizable to a [person of ordinary skill in the art] at the time.” Ex. 1003 ¶ 35. record that it was “well known and would have been obvious” “for elapsed playback time to be indicated by time stamps included in the audio content.” Pet. 15–16 (citations omitted).14” slip op. at 17

  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,615,154

Holdings, summaries, rulings, issues, outcomes, winners and claim constructions shown for a decision were generated by a large language model reading the opinion. They are a guide to the decision, not the decision. Confirm every one against the court's own text before relying on it. Outcomes read from the patent owner’s side. Party names are extracted from the decision and are missing on about 900 short Director denials and scans, which carry the trial number instead.